Posts Tagged: "Federal Circuit"

In this issue of the Federal Circuit Review: (1) Damages for Lost Profits May Not Be Based On Extraterritorial Services Performed by an Infringer’s Customers Under § 271(f); (2) Federal Circuit Invalidates Claims Under the On-Sale Bar for Commercial Exploitation of the Invention Before the Critical Date; and (3) The PTO’s 180-Day Filing Deadline of the Optional Interim Procedure for PTA Reconsideration Request Is Not Arbitrary and Capricious.

Former Finnegan, Henderson partner Kara Stoll has been unanimously confirmed by the United States Senate for a seat on the United States Court of Appeals for the Federal Circuit. According to Politico, Stoll’s confirmation makes history because she is the first minority woman to serve on the Federal Circuit.

Last week the Federal Circuit scheduled oral argument en banc in THE SLANTS trademark case for the morning of October 2, 2015, taking up the question of whether §2(a) of the Lanham Act (15 U.S.C. § 1052(a)) can withstand First Amendment scrutiny. Writing separately after the panel decision, Judge Moore offered 24 pages of “additional views” on the matter, encouraging the Federal Circuit to “revisit McGinley’s holding on the constitutionality of §2(a),” noting that “the protection accorded to commercial speech has evolved significantly since the McGinley decision.”

In this issue of the Federal Circuit Review: (1) Bad Lawyering Is Not Misconduct For Awarding Attorneys Fees; (2) Continuing Applications Are not Entitled to Patent Term Adjustment for Delay in the Prosecution of the Parent Application.

In this issue of the Federal Circuit Review: (1) A Patent Owner Must Show They Are Entitled to Amended Claims In an Inter Partes Review, Including in View Of All Prior Art of Record, and Known to the Patent Owner; (2) Federal Circuit Reverses Every E.D. Va. Claim Construction on Appeal in TomTom v. Adolph Mobile Tracking System Suit; and (3) Federal Circuit Overrule the “Strong Presumption” Embodied in § 112 para. 6 for Functional Limitations Expressed Without the Term “Means.”

Partners Joe Robinson and Bob Schaffer have for some time published a Federal Circuit Review Newsletter. I have been a subscriber since they started publishing that newsletter just over a year ago. I pitched Joe and Bob with the idea of publishing their weekly newsletter on IPWatchdog.com. They liked the idea. Thus, I am pleased to announce that beginning Friday, June 26, 2015, IPWatchdog.com will publish the Troutman Sanders newsletter each Friday.

There can be little doubt of the exceptional importance of Akamai Technologies, Inc. v. Limelight Networks, Inc. to the intellectual property community, and to innovators as a whole. The issue of joint infringement has been the focus of much discussion in recent years by academia, the media, and industry. In its 2014 remand of this case, the Supreme Court suggested this Court would have the opportunity to “revisit the § 271(a) question if it so chooses,” 134 S. Ct. 2111, 2120 (“Akamai III”). The AIPLA, as amicus curiae, argues that the Federal Circuit should choose to do so by rehearing the case en banc because the single entity rule as set out by the Panel majority would make it nearly impossible for certain patent holders to enforce their patents against joint infringers.

The opinion focused on whether adequate structure corresponding to the “coordinating” function is disclosed in the specification. After determining that a special purpose computer is required to perform the function, the court searched for an algorithm for performing the function, but did not find one. The court rejected Williamson’s argument that the distributed learning control module controls communications among the various computer systems and that the “coordinating” function provides a presenter with streaming media selection functionality. The disclosures relied upon by Williamson were thought of by the court as merely functions of the distributed learning control module and opined that the specification does not set forth an algorithm for performing the claimed functions.

Functional claim language is increasingly being used by practitioners to capture the metes and bounds of an invention, especially in computer-implemented inventions. Sometimes using functional language in a claim limitation is unavoidable. Functional language does not, in and of itself, render a claim improper. However, as recently experienced in Williamson v. Citrix (en banc) and Robert Bosch, using functional language carries a significant risk of having the claim invalidated as indefinite following a determination that the claim invokes § 112(f) even when the patentee does not intend to have the claim treated under § 112(f).

This statute tried to mirror the Hatch-Waxman statute for small molecules, including both an abbreviated drug approval process and a mechanism to address any patent claims during drug approval. However, because of the differences between these two types of drugs, stemming from the increased complexity in manufacturing and patent protection, unique provisions were included in the BPCIA. Unfortunately, as Judge Lourie of the Federal Circuit put it, the BPCIA could win a “Pulitzer prize for complexity or uncertainty.” And, it is these new provisions that could prove the downfall of the BPCIA, at least as it currently exists.

The opinion provides guidance in terms of when divided infringement actually imposes liability for patent infringement. When a mastermind offloads one or more steps of a claimed method to another entity, then the actions of that other entity are vicariously attributed to the mastermind only if the relationship is one of a principal-agent or joint enterprise, or if there is a contract between the parties requiring or mandating the other entity to perform the offloaded method step. Whether other terms that limit the vicarious nature of a contract might impose liability will have to be litigated in the future.

In a unanimous vote the Senate Judiciary Committee approved the Stoll nomination, which now moves on to the full Senate. If confirmed Stoll would take the vacant spot created by the retirement of Judge Randall Rader.

Two independent errors warrant reversal, but to be fair, the district court did not have the benefit of the Supreme Court’s decision in Teva. Now, the Federal Circuit has the opportunity to address the interplay of Teva with claim construction in design patents. This is a much needed clarification.

Apparently, despite the fact that there are strict page limits imposed at the Federal Circuit, Soverain was somehow supposed to fully brief all of the issues directly raised by Newegg, as well as all of the issues an activist Federal Circuit could possibly imagine. To call this a ridiculous burden doesn’t begin to scratch the surface. The Federal Circuit is depriving Soverain of property rights without due process, period. The lack of process afforded Soverain both in the Newegg case and in the Victoria Secret case should shock everyone.

It would be extremely unsettling if the Supreme Court has weakened Judge Lourie’s resolve to independently and properly interpret the Patent Act. If there is another explanation for his flip-flop on matters of patent eligibility I would love to hear it, but so far an explanation for diametrically different opinions has not been forthcoming. I don’t expect Judge Lourie to make a speech or hold a press conference like a politician, but if he is going to make diametrically opposite decisions in the same case, on the same facts, relating to the same claims, he owes litigants and the industry an explanation. Without an explanation it makes the entire process seem nothing more than arbitrary and capricious.